The disputed domain names <creditmutuel.expert> and <creditmutuel.shop> are registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2018.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 24, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the political and central body for the banking Crédit Mutuel. Crédit Mutuel is the second leading banking and insurance services group in France, with over 12 million customers for more than a century. Crédit Mutuel is composed of a network of 3178 offices in France, congregated in 18 regional federations. The group is a major actor in the banking market for both individuals and businesses. Complainant’s main website is available at “www.creditmutuel.com” and “www.creditmutuel.fr”, dedicated to its off- and online services, including online banking services for its clients.

Complainant has adduced evidence that it is the owner of a large number of trademarks consisting of or including the terms “credit mutuel”, in France and abroad, including the following:

- CREDIT MUTUEL, French semi-figurative trademark No. 1475940, registered on July 8, 1988 (duly renewed), in classes 35 and 36;

- CREDIT MUTUEL, French semi-figurative trademark No. 1646012, registered on November 20, 1990 (duly renewed), in classes 16, 35, 36, 38 and 41;

- CREDIT MUTUEL, European Union word trademark No. 9943135, filed on May 5, 2011 and registered on October 20, 2011, in classes 9, 16, 35, 36, 38, 41, 42 and 45;

- CREDIT MUTUEL, International semi-figurative trademark No. 570182, registered on May 17, 1991 (duly renewed), in classes 16, 35, 36, 38 and 41, designating inter alia Benelux, Italy and Portugal.

Complainant (or its affiliates) is also the registered owner of a number of domain names consisting of the terms “credit mutuel”, including inter alia, <creditmutuel.com> (registered on October 28, 1995), <creditmutuel.fr> (registered on August 10, 1995), <creditmutuel.net> (registered on October 3, 1996), <creditmutuel.info> (registered on September 13, 2001) and <creditmutuel.org> (registered on June 3, 2002).

The disputed domain name <creditmutuel.expert> was registered on May 28, 2018 and <creditmutuel.shop> on May 29, 2018. At the time of filing of the Complaint, <creditmutuel.expert> was resolving to a phishing or malware website, as detected by Google’s Safe Browsing (as shown by the evidence on record), whereas the disputed domain name <creditmutuel.shop> is inactive.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain names are identical to its trademark, as the CREDIT MUTUEL trademark is identically reproduced in the disputed domain names and the generic Top-Level Domain (“gTLD”) “.expert” and “.shop” is insufficient to distinguish the disputed domain names from Complainant’s trademark.

Complainant further states that Respondent does not have any rights or legitimate interests in the disputed domain names. In this regard, Complainant states that Respondent is not related in any way to Complainant or its business and neither is Respondent one of Complainant’s agents. Complainant also affirms that no license or authorization has been granted to Respondent to make any use or apply for registration of the disputed domain names.

Complainant submits that the disputed domain names were registered and are being used in bad faith. Complainant holds that its CREDIT MUTUEL trademark enjoys a strong reputation and is well-known and that in similar cases where the disputed domain name consists of a well-known trademarks, there is a prima facie presumption that respondent registered the disputed domain name for the purpose of selling it to complainant or one of its competitors. Complainant submits that Respondent could not have ignored the reputation of the CREDIT MUTUEL brand at the time of registration of the disputed domain names and that Respondent registered them precisely because she was aware of the well-known character of Complainant’s brand. Complainant further states that Respondent chose the disputed domain names seeking to create an impression of association with Complainant. In addition, it underlines that CREDIT MUTUEL is neither a descriptive nor a generic term but rather a distinctive term. Moreover, Complainant argues that the choice of the top-level domains (TLDs) “.expert” and “.shop” is likely to increase the likelihood of confusion with Complainant as it may induce internet users into believing that there is an association between the disputed domain names and Complainant. Complainant highlights a previous decision under the Policy involving its CREDIT MUTUEL trademark whereby the panel found that, given the reputation of Complainant’s trademark, the registration of the disputed domain name was “clearly intended to mislead and divert consumers to the disputed domain name”. See Confédération nationale du credit mutual v. Yu Ke Rong, WIPO Case No. 2018-0948(<creditmutuel.store>).

Complainant also submits that Respondent’s use of the disputed domain names is in bad faith. Complainant states that the disputed domain names are currently inactive but previously resolved to phishing websites, which were subsequently shut down after being reported to the hosting provider and the competent authorities. Complainant underlines that it regularly faces phishing attempts and has to protect its clients from phishing attacks. Complainant holds that Respondent’s current “non-use” or passive holding of the disputed domain names constitutes bad faith given the strong reputation and renown of Complainant’s trademark, the absence of evidence of actual or contemplated good faith use by Respondent, and the fact that Respondent has taken active steps to conceal its identity. Complainant also states that the disputed domain names “might have been used for fraudulent emailing purposes”.

B. Respondent

Respondent did not reply to Complainant’s contentions and is therefore in default.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain names, Complainant must prove that each of the following three elements are present:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Furthermore, paragraph 14(b) of the Rules provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether Complainant has established relevant trademark rights. Complainant has adduced evidence that it has registered trademark rights in CREDIT MUTUEL in connection, inter alia, with banking and financial services. The Panel is therefore satisfied that Complainant has established relevant trademark rights.

The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain names are identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Section 1.7 of the WIPO Overview 3.0.

The Panel finds that the disputed domain names are confusingly similar to the textual components of Complainant’s trademark. Complainant’s trademark is clearly recognizable in the disputed domain names.

The generic TLD “.expert” and “.shop” is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s trademark.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances that a respondent may rely on to demonstrate rights to or legitimate interests in a domain name, including:

“(i) before any notice to [respondent] of the dispute, [respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trade mark or service mark rights; or

(iii) [respondent] is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

A complainant is required to establish a prima facie case that respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the statements and documents submitted by Complainant and finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interests in the disputed domain names and that, as a result of her default, Respondent has failed to rebut such a showing.

Complainant has asserted that Respondent is not affiliated to Complainant or has been authorized by Complainant to use Complainant’s trademark, in a domain name or otherwise.

There is no evidence that Respondent is commonly known by the disputed domain names or a name corresponding to the disputed domain names, in accordance with paragraph 4(c)(ii) of the Policy.

The evidence on record shows that the disputed domain name <creditmutuel.expert> is being used for a phishing or malware website. Respondent’s use of the disputed domain name <creditmutuel.expert> for a phishing or malware website cannot be considered neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as Respondent is seeking to take advantage of Complainant’s rights by deceptive means. See National Westminster Bank plc v. John Brendan, WIPO Case No. D2014-2045. Furthermore, prior panels have categorically held that use of a domain name for phishing, distributing malware or any other type of fraudulent activity can never confer rights or legitimate interests in a domain name. See section 2.13.1 of the WIPO Overview 3.0.

Complainant has submitted that the disputed domain name <creditmutuel.shop> is being passively held, but was also previously resolving to a phishing website. There is no evidence on record to support this claim. However, based on Respondent’s use of the disputed domain name <creditmutuel.expert> for a phishing website, the Panel finds that it is reasonable to infer that Respondent is not intending to use the disputed domain name <creditmutuel.shop> for any legitimate activity. In any event, the Panel is also of the view that Respondent’s passive holding of the disputed domain name <creditmutuel.shop> cannot give rise, in the circumstances of this case, to rights or legitimate interests in the disputed domain name, in particular given the strength of Complainant’s trademark and the nature of the disputed domain name <creditmutuel.shop> itself, which consists of an exact match of Complainant’s trademark, as it would likely result in misleading diversion and taking advantage of Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel also finds that Respondent’s lack of rights or legitimate interests in the disputed domain names can also be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain names.

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that [respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or

(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [respondent’s] web site or location.”

The Panel is convinced, on a balance of probabilities, that Respondent registered the disputed domain names in bad faith. Complainant’s trademark not only significantly predates the registration date of the disputed domain names but also enjoys considerable goodwill and renown, particularly in France where Respondent is based. Complainant’s trademark has also acquired a considerable degree of distinctiveness in connection with banking and financial services. The Panel therefore finds that the overall circumstances of this case, including Respondent’s subsequent use of the disputed domain name <creditmutuel.expert> as described below, strongly suggest that Respondent was aware of Complainant’s rights at the time of registration of the disputed domain names and that he did so in order to take advantage of such rights.

The Panel also finds that Respondent’s use of the disputed domain names is in bad faith. The evidence on record shows that, at the time of filing of the Complaint, the disputed domain name <creditmutuel.expert> resolved to a phishing or malware website. The Panel finds that Respondent’s use of the disputed domain name <creditmutuel.expert> for a phishing or malware website is in itself sufficient to support a finding of bad faith use of the disputed domain name <creditmutuel.expert>, as Respondent is intentionally attempting to attract for commercial gain Internet users to her website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

The disputed domain name <creditmutuel.shop> is currently inactive but Complainant submits that it was previously resolving to a phishing website although there is no evidence on record to support this claim. However, based on Respondent’s use of the disputed domain name <creditmutuel.expert> for a phishing website, the Panel finds that it is reasonable to infer that Respondent’s intentions for the disputed domain name <creditmutuel.shop> are also not well-meaning. In any event, the Panel is of the view that Respondent’s passive holding of the disputed domain name <creditmutuel.shop> constitutes in the circumstances of this case bad faith use, particularly taking into account the strength of Complainant’s trademark, Respondent’s use of the disputed domain name <creditmutuel.expert> for a phishing website, and Respondent’s failure to take part in the present proceedings. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

The Panel therefore finds that Respondent has both registered and used the disputed domain names in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <creditmutuel.expert> and <creditmutuel.shop> be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist
Date: November 7, 2018